Complainant is Citrix Systems, Inc. of Bedford, Massachusetts, United States of America, represented by Burns & Levinson LLP, United States of America.
Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Media Tapestry of Skillman, New Jersey, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with N LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2015. On June 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 22, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same date.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 24, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 17, 2015.
The Center appointed Gary J. Nelson as the sole panelist in this matter on July 29, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant is the owner of at least six United States Trademark Registrations for CITRIX in connection with virtualization software, hardware and related goods and services. Specifically, Complainant owns at least the following trademark registrations:
Country/Territory
Registration No.
Mark
Classes
Date of Registration
United States
2614647
CITRIX
42
September 3, 2002
United States
3584524
CITRIX
21
March 3, 2009
United States
3674455
CITRIX
9
August 25, 2009
United States
3584525
CITRIX
25
March 3, 2009
United States
1685759
CITRIX
9
May 5, 1992
United States
2469609
CITRIX
41
July 17, 2001
The disputed domain name appears to have been registered on October 31, 2014. There is no active website associated with this disputed domain name.
The disputed domain name appears to have been registered on December 10, 2014. There is no active website associated with this disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant is an industry leader in the development, manufacture and distribution of remote access, collaborative tools, virtual desktop solutions and infrastructure systems.
Complainant offers CITRIX branded products used by enterprises and IT professionals around the world to monitor and optimize remote access to applications and for remote desktop management. Complainant has been offering these products for decades.
At least as early as 1990, Complainant adopted and began using in commerce the CITRIX trademark in connection with virtualization software, hardware and related goods and services.
Since 1990, Complainant has been continuously using its CITRIX trademark in connection with products and services that address the evolving trends and technologies in the virtualization space.
Currently, hundreds of thousands of organizations worldwide rely on Complainant to help them build simpler and more cost-effective information technology environments enabling virtual work and data centers.
The disputed domain names and are confusingly similar to Complainant’s CITRIX trademark.
Respondent has no rights or legitimate interests in the disputed domain names.
Respondent registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent’s failure to submit a formal Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has established that it owns prior rights in the CITRIX trademark and the disputed domain names are confusingly similar to Complainant’s CITRIX trademark.
Complainant owns at least six CITRIX trademark registrations in the United States.
Accordingly, Complainant has established rights in its CITRIX mark pursuant to Policy, paragraph 4(a)(i). See Janus International Holding Co. v. Scott Rademacher,WIPO Case No. D2002-0201 (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting this assumption).
The disputed domain names, and , are confusingly similar to Complainant’s CITRIX trademark because the disputed domain names incorporate the entirety of Complainant’s CITRIX trademark and merely add a generic descriptive term immediately following the CITRIX trademark (i.e., “solution” and “solutions”, respectively), a hyphen, and the generic Top-Level “.com” domain suffix.
Neither the addition of purely descriptive term to a well-known mark nor the addition of a generic Top-Level Domain suffix is typically sufficient to create a distinct domain name capable of overcoming a proper claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH,WIPO Case No. D2001-0026 (finding confusing similarity where the domain name contains the identical mark of the complainant combined with a generic word or term); see also, Montage Hotels & Resorts, LLC v. Daniel Kirchhof/Unister GmbH,WIPO Case No. D2011-1042 (finding the addition of the geographic term “Beverly Hills” to Complainant’s MONTAGE trademark created a domain name that was confusingly similar to Complainant’s trademark); see also, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word […] nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy, paragraph 4(a)(i) is satisfied). Also, the addition of a hyphen is insufficient to avoid a finding of confusing similarity. See F. Hoffmann-La Roche AG v. Brian Robinson,WIPO Case No. D2007-0659 (finding the domain name to be confusingly similar to Complainant’s VALIUM trademark).
Confusing similarity is especially acute in this case where the generic or merely descriptive term (i.e., “solutions” and “solution”) simply suggests that products associated with Complainant’s CITRIX trademark are providing a desired solution to a specific problem, especially when Complainant is in the business of providing solutions to software and remote access problems. See ACCOR, Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners,WIPO Case No. D2002-0625 (“confusion is only heightened when the generic word added by Respondent is descriptive of the Complainant’s goods or services marketed in relation to the trademark”).
Accordingly, the addition of the terms “-solutions” and “-solution” directly behind Complainant’s CITRIX trademark is insufficient to avoid a finding of confusing similarity.
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Respondent has failed to file a Response, which can suggest, in appropriate circumstances, that Respondent lacks rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse.,WIPO Case No. D2000-1221 (finding that respondent’s failure to respond in a UDRP proceeding can be construed, in appropriate circumstances, as an admission that it has no rights or legitimate interests in a domain name).
By not filing a Response, Respondent has not provided any evidence that it is commonly known by the disputed domain names, or that it is commonly known by any name consisting of, or incorporating the words “citrix,” “solutions”, “solution,” or any combination of these words. In Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interests could be found where (1) respondent is not a licensee of the complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that by not submitting a Response, Respondent also failed to provide any evidence that it may be a licensee of Complainant or that its registration of the disputed domain names predate the establishment of Complainant’s rights in its CITRIX trademark.
For both disputed domain names, Respondent is maintaining passive and undeveloped websites. Respondent’s failure to develop active websites corresponding to the disputed domain names is evidence supporting the conclusion that Respondent has no rights or legitimate interests in these domain names. See Pharmacia & Upjohn AB v. Romero,WIPO Case No. D2000-1273 (finding no rights or legitimate interests where respondent failed to submit a response to the Complaint and made no use of the domain name in question); see also Melbourne IT Limited. v. Grant Matthew Stafford,WIPO Case No. D2000-1167 (finding no rights or legitimate interest in the disputed domain name where there is no proof that respondent made preparations to use the disputed domain name in connection with a bona fide offering of goods and services before notice of the domain name dispute, the disputed domain name did not resolve to a website and respondent is not commonly known by the disputed domain name).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
The Panel finds that Respondent likely chose the disputed domain names with full knowledge of Complainant’s rights in the CITRIX trademark. Supporting this conclusion is the fact that Respondent appears to have systematically sent out fraudulent email solicitations directly targeting Complainant’s customers, all while masquerading as Complainant. The Panel finds this activity to be conclusive evidence that Respondent registered and is using the disputed domain names in bad faith.
Respondent’s awareness of the CITRIX trademark may also be inferred because the mark was registered with the U.S. Patent and Trademark Office prior to Respondent’s registration of the disputed domain names and since the CITRIX trademark is widely known. The relevant priority date for all of Complainant’s trademark registrations precedes the date upon which the disputed domain names were registered (i.e., October 31, 2014 for ; and December 10, 2014 for ). See T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066 (finding bad faith where respondent had actual and constructive notice of complainant’s trademarks registered in the United States); see also Kraft Foods (Norway) v. Fredrik Wide and Japp Fredrik Wide,WIPO Case No. D2000-0911 (“the fact that Respondent [chose] to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).
The Panel therefore finds that Complainant has proven the requirement of Policy, paragraph 4(a)(iii). 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names and be transferred to Complainant.
Gary J. Nelson
Sole Panelist
Date: August 5, 2015
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